Appeal No. 94-3726
Application 07/978,531
patentability of the products defined by product-by-process
claims, and not the processes for making them, that must be
gauged in light of the prior art. See In re Wertheim, 541
F.2d 257, 271, 191 USPQ 90, 103 (CCPA 1976). A rejection
under §§ 102 or 103, jointly or alternatively, is proper where
the prior art discloses a product that reasonably appears to
be either identical or only slightly different from the
product claimed in a product-by-process claim. See in re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980),
and the Manual of Patent Examining Procedure, § 2113, 6th ed.,
Rev. 3, July 1997. The examiner bears a lesser burden of
proof in making a case of prima facie obviousness for product-
by-process claims because of their peculiar nature than would
be the case when a product is claimed in the more conventional
fashion. See In re Fessman, 489 F.2d 742, 744, 180 USPQ 324,
326 (CCPA 1974).
Even considering the product-by-process form of appealed
claim 11, we do not agree with the examiner that the applied
prior art reasonably shows a product identical to or slightly
different than the claimed product in view of our
8
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